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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Honeywell International Inc. v. Alireza Afzalizade

Case No. DIR2015-0018

1. The Parties

The Complainant is Honeywell International Inc. of Morris Plains, New Jersey, United States of America, represented by Leason Ellis, United States of America ("United States").

The Respondent is Alireza Afzalizade of Tehran, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <honeywell.ir> ("the Disputed Domain Name") is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 20, 2015. On November 20, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Name. On November 21, 2015, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on November 24, 2015.

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2015. No Response was filed. Accordingly, on December 23, 2015, the Center notified the Respondent's default.

The Center appointed Isabel Davies as the sole panelist in this matter on January 7, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant has an international portfolio of registered trademarks for HONEYWELL dating back at least to the 1960s.

The Disputed Domain Name was registered on November 12, 2012.

5. Parties' Contentions

A. Complainant

The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant states that it is a Fortune 100 company with approximately 300 sites located in 68 countries around the world. It employs about 132,000 employees worldwide, including more than 22,000 engineers and scientists and has business units in aerospace, performance materials and technologies, and automation and control solutions. It achieved sales of almost USD 40 Billion in 2015.

The Complainant states that its business dates back more than 125 years. The name "Honeywell" itself dates back to the early 1900s with the formation of Honeywell Heating Specialty Co. Incorporated, a company specializing in hot water heat generators.

The Complainant states that it has invested significant time and resources in developing and protecting its brand name through the registration of trademarks in numerous countries around the world. In the course of protecting its mark, it has obtained many trademark registrations for the mark HONEYWELL in the United States and in other countries since at least the 1960s including several registrations of the mark HONEYWELL in Iran dating back to 1973.

The Complainant states that it has developed substantial goodwill in the name and mark HONEYWELL and is famous among consumers and is therefore entitled to a broad scope of protection.

The Complainant contends that, for purposes of determining whether confusing similarity exists, the Panel should accord great weight to the reputation of the name and mark HONEYWELL, and that the fame of the mark HONEYWELL has been confirmed by past Uniform Domain Name Dispute Resolution Policy (UDRP) panels.

The Complainant contends that the Disputed Domain Name is identical to the name and mark HONEYWELL in which Complainant has prior rights.

The Complainant states that past UDRP and irDRP panels have found that, because the addition of a generic Top-Level Domain (gTLD) or country code Top-Level Domain (ccTLD) is technically required, this element can be disregarded when trying to assess whether a domain name is identical or confusingly similar to a trademark.

Consequently, the Complainant submits, the Disputed Domain Name is identical to the Complainant's name and mark HONEYWELL.

Accordingly, the Complainant submits, the Panel should find that Policy paragraph 4(a)(i) has been satisfied.

Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

The Complainant states that Policy paragraph 4(a)(ii) requires the Complainant to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name. However, once the Complainant makes a prima facie showing under Policy paragraph 4(a)(ii), the burden then shifts to the Respondent to establish rights or legitimate interests in the Disputed Domain Name.

The Complainant contends that it has made out its prima facie case since its trademark rights precede the registration of the Disputed Domain Name by many years if not decades, as the Complainant's rights in the mark HONEYWELL date back to the early 1900s, long before the creation of the world wide web.

The Complainant submits that the Respondent would be unable to supply any evidence that he has used or prepared to use the Disputed Domain Name with a bona fide offering of goods or services. When attempting to access the website at the Disputed Domain Name it merely states the following:

"We'll Have More Soon

This site is currently under construction and we will have more for you soon. For This Site Owners: Please check account setup confirmation e-mail for instructions".

The Complainant states that such use of a domain name to post a parking or landing page does not of itself confer rights or legitimate interests arising from a bona fide offering of goods or services.

The Complainant asserts that the Respondent would be unable to establish that he has been commonly known by the Disputed Domain Name. The Respondent is identified in the WhoIs records as "Alireza Afzalizade". The fact that the Respondent is not commonly known by the Disputed Domain Name further demonstrates that he has no rights or legitimate interests in the Disputed Domain Name.

The Complainant states that the Respondent is also not a licensee of the Complainant or otherwise authorized by the Complainant to use the mark HONEYWELL.

Accordingly the Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name which identically co-opts the Complainant's name and mark HONEYWELL without license or permission. As a result, the Complainant submits, the Panel should find that Policy paragraph 4(a)(ii) has been satisfied.

The Disputed Domain Name was registered or is being used in bad faith

The Complainant states that paragraph 4(b) of the Policy identifies, without limitation, circumstances that "shall be evidence of the registration and use of a domain name in bad faith".

It states that, specifically with respect to the facts in issue here, it has been held that paragraph 4(b) recognizes that inaction (e.g.,passive holding) in relation to a domain name registration can constitute a domain name being used in bad faith.

The Complainant contends that, any attempt to actively use the Disputed Domain Name would inevitably lead to a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's website among Internet users who would inevitably be led to believe that such a "honeywell" denominated site on the world wide web would be owned by, controlled by, established by or in some way associated with the Complainant. Accordingly, the Complainant submits, transfer should be awarded before a website can be developed.

The Complainant also states that it appears that the Respondent is attempting to sell the Disputed Domain Name to others as it is listed at "www.domainbazar.ir", a website which appears to offer domain names for sale to others.

The Complainant states that offering or advertising a domain name for sale through a domain name broker or reseller is evidence of bad faith.

The Complainant also states that the WhoIs records indicate that the Respondent is associated with 45 other domain names and the WhoIs history for the Disputed Domain Name shows 47 records have been archived since 2008.

The Complainant avers that, as there is no affiliation between the Respondent and the Complainant, the Complainant has no control over the nature and quality of the Respondent's website. Its registration also prevents the Complainant from registering its name and mark HONEYWELL in the ".ir" space. Therefore, the Complainant contends, absent transfer, the valuable reputation of the Complainant and its well-known name and mark HONEYWELL are likely to be diminished, diluted and tarnished by association with the Respondent and its uncontrolled use and potential sale of the Disputed Domain Name. In light of the above, the Complainant contends that the Respondent has registered and is using the Disputed Domain Name in bad faith and in violation of Policy paragraph 4(a)(iii).

B. Respondent

The Respondent failed to respond.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain relief. These elements are:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) The Disputed Domain Name has been registered or is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064).1 However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party's failure to comply with any provision of or requirement under the Rules, including the Respondent's failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. The Complainant bears the onus of proving its case on the balance of probabilities (see paragraph 4.7 of the WIPO Overview 2.0). The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is a successful Fortune 100 company which has used the name "Honeywell" for over 100 years.

The Panel accepts that the Complainant has invested significant time and resources in developing and protecting the HONEYWELL mark through registrations in many countries around the world, including registrations in the United States and in other countries since the 1960s. These include several registrations of the mark HONEYWELL in Iran dating back to 1973.

The Panel accepts that the Disputed Domain Name is identical to the name and mark HONEYWELL in which the Complainant has prior rights, as the ccTLD ".ir" can be disregarded in this case when assessing whether the Disputed Domain Name is identical or confusingly similar to the trademark.

Accordingly, the Panel find that Policy paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

The Panel accepts that the burden of establishing that the Respondent has no rights or legitimate interests shifts to Respondent if the Complainant has made out a prima facie case and that the Complainant has done so, inter alia, by evidence of its trademark registrations dating from the 1960s.

The Panel accepts that the Respondent has not supplied any evidence that he has used or prepared to use the Disputed Domain Name with a bona fide offering of goods or services. When attempting to access the website at the Disputed Domain Name it merely states the following:

"We'll Have More Soon

This site is currently under construction and we will have more for you soon. For This Site Owners: Please check account setup confirmation e-mail for instructions".

The Panel accepts that this use of the Disputed Domain Name to post a parking or landing page does not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services."

The Panel accepts that the Respondent has not established that he has been commonly known by the Disputed Domain Name and is not a licensee of the Complainant or otherwise authorized by the Complainant to use the mark HONEYWELL.

Accordingly the Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name and finds that Policy paragraph 4(a)(ii) has been satisfied.

C. Registered or Used in Bad Faith

The Panel accepts that inaction (e.g.,passive holding) in relation to a domain name registration can constitute a domain name being used in bad faith and that any attempt to actively use the Disputed Domain Name would likely lead to confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site among Internet users who would be led to believe that such a "honeywell" denominated site on the world wide web would be owned by, controlled by, established by or in some way associated with the Complainant.

The Panel also accepts that it appears that the Respondent is attempting to sell the Disputed Domain Name to others as it is listed at "www.domainbazar.ir", a website which appears to offer domain names for sale to others and that offering or advertising a domain name for sale through a domain name broker or reseller in the circumstances of this case is evidence of bad faith. The Panel notes that the WhoIs records indicate that the Respondent is associated with 45 other domain names.

The Panel accepts that, as there is no affiliation between the Respondent and the Complainant, the Complainant has no control over the nature and quality of the Respondent's website and that its registration also prevents the Complainant from registering its name and mark HONEYWELL in the ".ir" space.

The Panel considers that it is inconceivable that the Respondent was unaware of the Complainant's reputation and trademarks in the light of the evidence provided by the Complainant. Therefore the Panel finds that the Disputed Domain Name was registered in bad faith.

The Panel also considers that the evidence which has been provided by the Complainant, including that of the holding page at the website and the offer of the Disputed Domain Name for sale constitutes use in bad faith.

In light of the above, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith and in violation of Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <honeywell.ir> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: January 20, 2016

1 While the Complaint was brought under the irDRP and not the UDRP, given the textual similarities between the two policies, the Panel finds relevant to the present dispute decisions rendered under the UDRP, as well as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), and will refer to these throughout.

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